Titan Industries Vs. Nitin P. Jain and Anr.
2006 (32) PTC 95 (Del)
The Plaintiff was incorporated in the year 1987 and its activities included manufacturing and marketing of watches, clocks and jewellery. The cause of filing the suit was the manufacturing and marketing of watches by the Defendants under the trade name/trade mark SONA while also using the artistic work of the Plaintiff. Suit was filed for permanent injunction, delivery of rendition of accounts and damages.
The Defendants moved an application under Order VII Rule 11 (d) of the Code of Civil Procedure read with Section 106(1) of the Trade Marks and Merchandise Act, 1958 rejection of the plaint on the ground that the Plaintiff has prayed for both the reliefs, damages as well as rendition of accounts, whereas the trade marks act allows the plaintiff any one relief of the two. Therefore, the suit is barred by law and is liable to be dismissed.
• Suit is not merely for infringement/passing off of trade mark under the Act but it is also a suit for infringement of copyright under the Copyright Act, 1957 and thus in view of the provisions of Section 55 of the Copyright Act, relief of damages as well as rendition of accounts can be claimed.
• Even under the Trade Marks Act, where one or the other relief can be claimed, it is necessary for the plaintiff to make prayer for both the reliefs and the plaintiff can exercise the right of election of a particular remedy at the conclusion of the hearing once the infringement of trade mark/passing off thereof is established.
• Specific averment is made that the trade mark SONATA is enclosed in a device which is an original artistic work within the meaning of Section 2(c) of the Copyright Act, 1957.
There is nothing wrong in claiming both the reliefs.
Even if it was a suit only under the Act of 1958 or Trade Marks Act, 1999, it was open to the Plaintiff to paraphrase the prayer clause in the manner done by the plaintiff in prayers (d) & (e) extracted above and exercise its right of election either between damages or profits at the conclusion of hearing of the case.
It is clear that whereas damages are a matter of right, account of profits is an equitable remedy and the court may or may not grant the latter relief. It is for this reason the claimant is given an option to claim either damages or profits and such an option is exercisable at the conclusion of hearing of the case. The claimant is, thus, permitted to plead for both the remedies, though in the alternative, so that the claimant who has been successful in action of trade mark infringement or passing off may exercise for such an option at the time of conclusion of the hearing. The reason for giving such an option at the conclusion of hearing is that the claimant may not have sufficient knowledge of the defendants’ activities to make an informed decision as to whether he will seek an inquiry as to damages or an account of profits and, Therefore, he may seek disclosure before making his election.
Doctrine of Split Trial
The Court relied on the judgment of Chancery Division in the High Court of Justice, England in the case of Island Records Limited v. Tring International PLC towards which covers the doctrine of “split trial”. In such a case, the action is divided into two stages. In the first stage the court holds inquiry as to whether the right of the plaintiff is infringed or not and once it is so held, a preliminary decree for rendition of accounts is passed and at the second stage the evidence is led on the question of assessment of damages.
Defendant submitted that there is no practice of ‘split trial’ in this country and, Therefore, the aforesaid provision is not applicable.
The said submission was rejected by hoding that “The system of ‘split trial’ prevails in all those cases where relief of rendition of accounts or damages/mesne profits is made.”
On Applicability of Doctrine of Split Trial in India
The aforesaid principles laid down by the English Courts on the claims for damages and/or account of profits are based on common law principle applicable in torts. Section 106 of the Act and its equivalent provision contained in Section 135 of the Trade Marks Act, 1999, are nothing but the legislative mandate to the aforesaid common law principles.
No doubt, in view of the aforesaid provisions normally the Plaintiff should have made the two prayers, namely, for damages and rendition of accounts, in the alternative as under the Act the Plaintiff could be given only one of the two reliefs. However, since the infringement under the Copyright Act, 1957 is also alleged, the manner in which the two reliefs are worded, cannot be faulted with.